Mark	Reg. No.	Reg. Date	Services
ROSS-SIMONS	1,317,429	1/29/85	Retail store and mail order services specializing in jewelry, china, silver and gift items.

As a result of its continuous and exclusive use of the mark ROSS-SIMONS since at least as early as 1954, the Complainant has built substantial value and goodwill in its ROSS-SIMONS registered mark.

Through its efforts, the Complainant has established a strong customer base and is known throughout its trading area as a provider of quality jewelry, tableware, collectibles, home dйcor and related items and retail store, mail order and on-line catalog services. By virtue of the quality of its products and services and as a result of its expenditure of considerable sums of money on advertising and promotional activity, the Complainant has built valuable goodwill in its registered mark ROSS-SIMONS. The mark is of immeasurable value to the Complainant.

The Complainant has an active presence on the Internet. It registered its <ross-simons.com> domain name on May 16, 1996 and has operated a website and on-line catalog at the Internet site to which the domain name resolves since at least December 1996. The Complainant’s registered mark ROSS-SIMONS is prominently featured on its website and has been featured on this website since the website went live in December 1996.

The Complainant also owns the domain name <ross-simonsdiamonds.com>. This domain name resolves to an active website which features Ross-Simons’ diamond jewelry.

The Complainant uses its ROSS-SIMONS website to advertise, promote and sell its jewelry, tableware, collectables, home dйcor and related items. The ROSS-SIMONS website operates 24 hours a day and permits consumers to browse and order the Complainant’s jewelry, tableware, collectibles, home dйcor and related products from the ROSS-SIMONS’ on-line catalog, purchase gift certificates and track orders.

The Complainant’s website communicates special events and promotions to its customers and provides customer service information. The Complainant’s customers also can create and edit wedding and other special occasion registries and search for the registries of others on the ROSS-SIMONS website.

In order to increase its presence on the Internet and its on-line sales, the Complainant has established and implemented an affiliate program.

In general, an affiliate program is an agreement between two e-commerce websites whereby the owner of one e-commerce site (the “affiliate”) advertises and provides a link to another e-commerce website. The affiliate is paid a commission for every sale that is made by someone the affiliate refers to the other e-commerce website.

The Complainant’s affiliate program permits owners of e-commerce websites to provide a link to the ROSS-SIMONS on-line catalog in the form of a banner advertisement or text link. If a customer of the e-commerce site were to click on the link to the ROSS-SIMONS website and then purchases a product from the ROSS-SIMONS on-line catalog, the affiliate can earn up to 7% of the merchandise value of the sale.

The Internet has become an extremely important communication and marketing tool and revenue source for Complainant.

Respondent registered the following Internet domain names with

GoDaddy Software on November 21, 2003:

<ros-simonsdiamonds.com>

<ros-ssimonsdiamonds.com>

<ross-simona.com>

<ross-simond.com>

<ross-simonscom.com>

<ross-simonsdiamondscom.com>

<ross-simoons.com>

<ross-simosn.com>

<ross-ssimons.com>

<ross-ssimonsdiamonds.com>

<rosssimonsdiamonds.com>

<rross-simons.com>

<wwwross-simonsdiamonds.com>

Sometime after the Respondent registered the above-noted domain names that are the subject of this proceeding, the Respondent became an affiliate of the Complainant. At that time, the Respondent began using the thirteen subject domain names fraudulently to obtain commissions from the Complainant’s affiliate program by instantaneously redirecting consumers who mis-spell or mis-type the Complainant’s name and domain name through a series of websites, to the ROSS-SIMONS on-line catalog. This re-direction is transparent to the consumer. In other words, to consumers, it appears that they typed the correct domain name to reach the ROSS-SIMONS website. To the manager of the ROSS-SIMONS affiliate program it appears that the consumer was referred to the Complainant’s site by the Respondent from a link on the Respondent’s legitimate website.

The subject domain names do not comprise the legal name of the Respondent or a name that is otherwise commonly used to identify the Respondent. There is nothing in the Respondent’s Whois information that indicates that the Respondent is commonly known by the subject domain names.

The Respondent is using the subject domain names to divert Internet traffic to its website that instantaneously re-directs unknowing and unsuspecting consumers to the Complainant’s website. As an affiliate of the Complainant, the Respondent does not maintain a website that contains a link to or advertisement for the Complainant’s ROSS-SIMONS on-line catalog, but collects commissions each time a consumer mis-spells or mistypes the Complainant’s domain name.

Except as in the affiliate contract, the Complainant never authorized, licensed or otherwise permitted the Respondent to use the Complainant’s registered mark ROSS-SIMONS or any confusingly similar variation thereof.

The Complainant has not authorized, licensed or otherwise permitted the Respondent to apply for or use any domain name comprising or incorporating the Complainant’s registered mark ROSS-SIMONS or any confusingly similar variation thereof.

The Respondent did not participate in the proceeding.

5. Parties’ Contentions

A. Complainant

The Complainant relies on its registration and use of the words “ROSS-SIMONS” and says that the subject domain names are confusingly similar to them.

Noting that the Respondent is not known by the words “Ross-Simons” and is not acting bona fide in its capacity as an affiliate of the Complainant, the Complainant contends that the Respondent does not have a legitimate interest in the subject domain names.

Bad faith is said to be shown by the activities of the Respondent and the fact that as an affiliate of the Complainant it clearly knew of the Complainant’s rights and interests.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to Paragraph 4(a) of the Policy, in an administrative proceeding the Complainant must prove that each of the following three elements are present: one, the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; two, the Respondent has no rights or legitimate interests in respect of the domain name; three, the domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is clear that the Complainant has rights to the words “Ross-Simons”, both as a registered mark and through use. The subject domain names are very similar to the Complainant’s mark and differ only by subtle misspellings.

The Administrative Panel is satisfied that the Complainant has met the requirements of Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Respondent has no connection to the Complainant’s mark other than as an affiliate, but it appears to be abusing that relationship. This fact, coupled with the creation of domain names that appear to be designed purposely to mislead, raises a strong inference that the Respondent does not have a legitimate interest in the subject domain names. The Respondent has done nothing to displace this inference.

The Administrative Panel is satisfied that the Complainant has met the requirements of Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Through its association with the Complainant as an affiliate, the Respondent clearly was aware of the Complainant’s mark and business. It created domain names that use the Complainant’s mark and differ from it only through purposeful misspellings. The Respondent abused the affiliate relationship.

Although a respondent is not obliged to participate in a domain name dispute, if it were not to do so, it would be subject to the usual inferences that flow from the reasonable assertions of a complainant.

In this case, the course of conduct of the Respondent leads to a prima facie case of bad faith. The Respondent has done nothing to supplant this.

The Administrative Panel is satisfied that the Complainant has met the requirements of Paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names:

Edward C. Chiasson Q.C.
Sole Panelist

Date: October 21, 2004

Источник информации: https://xn--c1ad2agd.xn--p1ai/intlaw/udrp/2004/d2004-0696.html

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